When, where and how to patent your innovations

WHEN, WHERE AND HOW TO PATENT YOUR INNOVATIONS

ByRajeev

INTELLECTUAL PROPERTY RIGHTS

• Rights given to persons over the creations of their minds.

• Give the creator an exclusive right over the use of his/her creation for a certain period of time.

• Classified into - Copyright and related to copyright- Industrial Property

COPYRIGHT ©

WHAT IS A COPYRIGHT?

• Applicable to any expressed representation of creative work.

• Literary, dramatic, artistic, musical works, producers of cinematograph films, sound recordings.

• Time period - life time + 60 years

EXAMPLE OF COPYRIGHT

Who all have rights in musical sound recording?• the lyricist who wrote the lyrics• the composer who set the music• the singer who sang the song• the musician(s) who performed the

background music• the person or company who produced the

sound recording.

TRADE MARK™

WHAT IS A TRADE MARK?

• A trade mark is a visual symbol.• A word, signature, name, device, label,

numerals or combination of colours. • Used to distinguish goods or services from

other similar goods or services.• Time period - 10 years + No limit

SOME EXAMPLES OF TRADE MARKS

TYPES OF TRADE MARKS

• Goods/Product Mark• Service Mark• Quality Mark• Collective Mark

SERVICE MARK ℠

QUALITY MARK

COLLECTIVE MARKS

GEOGRAPHICAL INDICATIONS

WHAT IS GEOGRAPHICAL INDICATIONS ?

• Link a product to a particular region• Indicate qualities, attributes, reputation associated with

geographic origin• Suggest connection to region’s inherent characteristics

(e.g., soil, climate etc)• May also imply production skills/processes associated

with region• Collective right, protecting knowledge remains in the

public domain• Time period - 10 + No limit

EXAMPLES OF GEOGRAPHICAL INDICATIONS

Nagpur oranges

Kanchipuram Silk SareeDarjeeling Tea

INDUSTRIAL DESIGN

WHAT IS INDUSTRIAL DESIGN?

• Shape or configuration • Pattern, ornamentation or composition of

lines or colours applied to any article by any industrial process

• The finished article appeals to and judged solely by the eye.

• Time period - 10 years + 5years

REQUIREMENT FOR FILING DESIGN

• New or original• Not be disclosed to the public in any form• Distinguishable from known designs or

combination of known designs

EXCLUSION

• Books, jackets, calendars, certificates, forms-and other documents, dressmaking patterns, greeting cards, leaflets, maps and plan cards, postcards, stamps, medals;

• Labels, tokens, cards, cartoons• Buildings and structures• Parts of articles not manufactured and sold separately• Mere change in size of article• Flags, emblems or signs of any country. Layout designs

of integrated circuits.

•What drives the design?– Shape– Surface ornamentation– Color contrast– Texture contrast

DESIGN

Rear Body Portion Disclaimed

Grilles

Disclaimed

PATENT

WHAT IS A PATENT?

• Patent is an exclusive right granted by the government to the applicant for an invention for a limited period of time in lieu of disclosure of his invention.

• Right to stop others from using the invention without permission.

• A patent is a business tool, patents spur interest in turning research results into products that benefit the public.

HISTORY OF INDIAN PATENT SYSTEM • 1856 - the act vi of 1856 on protection of inventions based on the british

patent law of 1852. Certain exclusive privileges granted to inventors of new manufacturers for a period of 14 years.

• 1859 - the act modified as act xv; patent monopolies called exclusive privileges (making. Selling and using inventions in india and authorizing others to do so for 14 years from date of filing specification).

• 1872 - the patents & designs protection act.• 1883 - the protection of inventions act. • 1888 - consolidated as the inventions & designs act. • 1911 - the Indian patents & designs act. • 1972 - the patents act (act 39 of 1970) came into force on 20th April 1972.• 1999 - patents (amendment) act, (1999) on march 26, 1999 came into force

from 01-01-1995.• 2002 - the patents (amendment) act 2002 came into force from 20th may 2003• 2005 - the patents (amendment) act 2005 effective from 1st January 2005.

WHAT YOU NEED TO KNOW ABOUT PATENTS

• What legal rights do patents provide (and not provide)?

• Who owns these rights?• What types of inventions are patentable?• What are the legal requirements for patentability?• What problems can arise?• What is the process for patenting an invention?• Who is an inventor?• Why are the claims so important?

THE INVENTION MUST BE NEW

•Prior to the filing

Publicly known/worked Available through the electronic networks

Published

WHAT NOT TO DO WHEN CONSIDERING FILING A PATENT APPLICATION

• No publication prior to filing- e.g. no article, press release, conference

presentation/poster/proceedings or blog entry• No sale of products incorporating the invention prior to

filing.• No lecture or presentation prior to filing.

- except under a non-disclosure agreement (NDA)• Seek professional advice soon.• File before others do.

INVENTIVE STEPTHE INVENTION MUST BE DIFFICULT TO MAKE

Publicly known/worked

Available on the Net Published

An invention

A person having ordinary skill in the art combine the information

AN INVENTION WHICH CAN BE EASILY MADE

Prior artCasters for facilitating The movement of a chair

Present invention

Casters for facilitating the movement of a desk

INVENTIVE STEP

NaOH + HCl NaCl + H2O

KOH + HCl KCl + H2O

KOH + HCl KCl + H2O

Non-obvious and having inventive step

Catalyst

PATENT INFORMATION

MUCH INFORMATION ONLY AVAILABLE IN PATENTS

Published elsewhere

Published in patents

80% found only in patents!

Where do secretive competitors publish their R&D?

SOLUTIONS FOUND IN PATENT DOCUMENTS

10%Protected90%

Free to use

You can find many great solutions for free!

PATENT SEARCHING• Search for ‘automatic razors’ – Found relevant information

under, “shaver,” “de-hairing device,” “hair removing device,” and even “unhairing device.”

• Search for Aspirin - Found under “acetylsalicylic acid”, “anti-inflammatory agent or cardiovascular drug”

• Search for printer – Found under “output device”, “physical print media”

KEYWORD SEARCHES OR TECHNOLOGY CLASS SEARCHES?

• Patent applicants don't use a common language– Legal implications– Scope of protection– Hide from

competitors• Hard to find the right

keywords• Good results usually

require professional patent search experience

KEYWORD SEARCHES• Each patent classified

by patent professionals • IPC is hierarchical and

very detailed: you can gradually narrow down searches

• Descriptions of classes written in such a way as to be easily found and understood

• Little experience required

• BUT: IPC classes won't match your needs 100%

TECHNOLOGY CLASS SEARCHES

PATENT JARGON writing instrument = pen

a plurality of balls = ball bearing

spherical object with floppy filaments to promote sure capture = toy ball

PATENT JARGON IN ELECTRONICSelectrical power source for electronic circuits

semiconductor switching device with a control electrode

galvanically isolated electrical coupling means

= battery

= transistor

= transformer

PATENT JARGON IN GENERAL TECHNOLOGY

elongate member = pipe, riser, cable or optical fibre

wing = door or window

PATENT JARGON IN GENERAL TECHNOLOGY

energy-storing means = spring

fastening means = nail, screw or rivet, etc.

12 KEY TECHNOLOGY AREAS30% Computing & Peripherals

13% Telecommunications

12% Automotive

12% Semiconductors

8% Medical Devices

8% Pharmaceuticals

6% Domestic Appliances

5% Aerospace

4%

Biotechnology

2% Petroleum

1% Food, Tobacco, Beverage Fermentation

1% Cosmetics

TYPES OF INFORMATION

• Bibliographic Search• Patentability Search• State of the Art Search• Continuing Search• Assignment Search• Infringement Search• Validity Search• Rights Termination Search

NUMBERS OF PATENT APPLICATIONS FILED BY INDIANS IN WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)

Year Individuals Legal Entities Total

2009-2010 231 521 752

2010-2011 243 628 871

2011-2012 254 519 773

2012-2013 (Till January, 2013) 171 475 646

WHAT HAPPENS IF YOU DO NOT PATENT YOUR INVENTIONS?

• Somebody else might patent them - legitimately exclude you

• Competitors will take advantage of your invention – competitor firms, cheap market price

• Possibilities to license, sell or transfer technology will be severely hindered - Without IP rights, transfers of technology would be difficult.

WHO CAN FILE A PATENT?

• True & First inventor• Assignee of True & First inventor• Legal representative of a deceased person• Either alone or jointly with other person

FORM OF APPLICATION

• Patent shall be for one invention only• In the prescribed format• Filed in the Patent Office• Accompanied by a provisional or

complete specification

TYPES OF APPLICATION

• Ordinary application• Conventional application• International application• National phase application• Divisional application• Patent of Addition

COMPLETE SPECIFICATION

• Title• Description of the invention• Claims• Drawings • Abstract

TITLE OF THE INVENTION

• Should indicate the subject • Precise, within 15 words• Consistent with description and claim

- “Improved electrical switch”- “An electrical switch for use in a domestic lighting

circuit”- “Data transfer using the bluetooth low energy

standard ”

DESCRIPTION

• Description discusses the invention• Should reflect that invention:

– novel– inventive– industrially applicable– patentable under Indian Patent Law

CONTENTS OF THE DESCRIPTION

• Field of the Invention • Background of Invention

– Prior Art details – Objects of Invention

• Statement of Invention • Detailed description of Invention

– Working examples• Drawings

FIELD OF INVENTION

• Shall indicate the specific area of invention• Brief information about the invention along

with the use of the invention– e.g., “The present invention relates to electronic

devices with network connections. More specifically, the described embodiments relate to electronic devices that transfer data using the Bluetooth Low Energy standard.”

PRIOR ART• Is a brief write-up of what is known before the

invention; sets out the problems associated with each of the known art; and describes the problem proposed to be solved by the invention.

• In India, this is not mandatory.

PRIOR ART

Different approach

Invention

OTHER FACTORS

• Generic expressions should be substantiated /supported properly.

• The names/terms used should be familiar to the person skilled in the art.

• Any newly coined terms/named should be clearly described

DRAWINGS

• Brief description on drawings• More detailed description with reference to

each drawings– Mechanical, electrical, electronics – utmost importance– Chemical, pharmaceutical, biotechnology – as a support

• Unique part numbers along with the parts• No descriptive matter shall appear on the

drawings except in the flow diagrams.

DRAWINGS

• Filed separately, shall be not included in the description

• At least one copy - neatly and clearly on a durable paper sheet.

• A4 size sheets with a clear margin of at least 4 cm on the top and left hand and 3 cm at the bottom and right hand of every sheet

• Sufficiently large to show the inventions clearly and dimensions shall not be marked on the drawings

Name of Applicant: Total No. of Sheets:Application No: Sheet No:

Signature of Applicant

58

CLAIMS

• Claims define boundary of monopoly.• Claims should relate to a single invention.• Claims should be clear and concise. • Claims should be supported by description.• Principal claim should define all essential

novel features.• Preferred features may be given in the

subordinate claims.

TYPES OF CLAIMS

• Product claim• Process claim / method claim• Product-by-process claim• Swiss type claim or use claim• Composition claim• Combination claim

BICYCLE1. A transport device for a human being characterised by

a. two or more wheelsb. at least one wheel lying in front of the other wheel or wheels, a frame to

which the wheels are rotatably connected,c. a manually operable bar arranged to change the position of the front

wheel with respect to the rear wheel or wheels whereby the transport device can be steered,

d. and foot-operable means to cause rotation of at least one wheel. 2. A transport device according to claim 1 in which there are two wheels

arranged as front and rear wheels in the same plane. 3. A transport device according to claim 2 in which the foot operable means is

arranged to cause rotation of the rear wheel.4. A transport device according to any preceding claim in which the front and

rear wheels are of equal diameter.

THE IP BEHIND THE BLACKBERRY

Patent

Patent CA 2508239A display for a handheld computing device includes a display panel; a circuit board carrying display electronics for the display panel; a cover assembly securing the display panel to the circuit board; and a resilient layer adhered to the circuit board for securing the display to the computing device.Inventors: HOLMES, CHEN, SIMOESOwner: RESEARCH IN MOTION LIMITED

Trade-mark

Trade-mark Registration TMA 638068Wares/Services: Electronic handheld unitsRegistrant: RESEARCH IN MOTION LIMITED

Industrial Design

Industrial Design Registration 125919Title: Handheld Electronic DeviceRegistrant: RESEARCH IN MOTION LIMITED

Do you know?

90%of patents are for

improvementsto existing patented inventions

PATENT EXAMINATION

1. Patentability2. Clarity of Description / Claims3. Unity of invention4. Novelty5. Inventive step6. Sufficient disclosure / Industrial applicability

REQUEST FOR EXAMINATION

• No Patent application shall be examined without filing request.

• Within 48 months from the date of filing.• Third party can file a request.

GRANT OF PATENT SUBJECT TO CERTAIN CONDITIONS

• Government can use for its own purpose.• Any person can use for experiment or research

purpose.• Government can use for public service by a

notification in the Official Gazette.

IS THERE A WORLDWIDE PATENT?

• No, it is a territorial right.• Have to file in the countries interested.

WORDNAMELOGO

e.g. for samePressure Cooker“PRESTIGE”“HAWKINS”“BUTTERFLY”

Any modification in SHAPEPATTERNCONFIGURATION

e.g. Shape of a HANDLE or BODY PORTION of a Pressure Cooker

Inventions relating to CONSTRUCTIONALFEATURES

e.g. Safety Valve Mechanism of a PRESSURE COOKER

TRADE MARKSDESIGNSPATENTS

INDUSTRIAL PROPERTY

GLIMPSE

• Copyright – Literary or Artistic – life time + 60 years

• Geographical Indication – quality of the product – 10 + No limit

• Trademark – Logo or Name – 10 years + No limit

• Designs – Aesthetics – 10 years + 5years• Patents – Technology – 20 years

WEBSITES FOR FINDING PATENTS

• www.worldwide.espacenet.com• www.ipindia.nic.in• www.nifindia.org• www.nrdcindia.com• www.patft.uspto.gov• www.wipo.int

CONTACT

PATENT OFFICEIPR Building,GST Road,Guindy,Chennai – 600 032.Ph: 044-22502039Website: ipindia.nic.in

Dr. S.P. SUBRAMANIYANAssistant Controller of Patents & DesignsE-Mail: spsubramaniyan@nic.in, spsubramaniyan@hotmail.comPh: +91 9444122064

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